Opposition guidelines – part 1

Reading the BOPI (Bulletin Officiel de la Propriété Industrielle) is barely more entertaining than reading the phone book.

This weekly publication by the French patent office (INPI) contains the abstracts of all published patent applications, as well as tons of bibliographic information.

Well, I must confess that I used to flip through the phone book once in a while, when we used to have those, without any purpose really. But today, I skimmed through some recent BOPIs with a purpose in mind.

Remember that the patent opposition “à la française has entered into force on April 1, 2020. I was curious to know how many oppositions have been filed yet. Looking at the BOPIs issued since then, it turns out that there has been only one.

The winner is FR 3080526, which relates to a device for heating milk. It is not entirely surprising that only one opposition has been filed, though. Oppositions can only be filed against patents granted as from April 1, 2020. Since there is a 9-month time limit after grant for filing an opposition, and since opponents tend to file their oppositions toward the very end of the opposition period – at least that is what we typically see at the EPO – it can be expected that oppositions may surge at the very end of 2020.

For anyone interested in the new opposition procedure, there is a much more interesting read, though: the first part of the opposition guidelines recently released by the INPI.

The patent guidelines of the INPI currently comprise three sections: one on patent filing and examination; one on “other procedures” which is concerned  inter alia with renewal fees and SPCs; and one on post-grant procedures, directed to limitation and opposition proceedings.

Only the initial phase of the opposition is addressed in the first part which has been officially released. Meanwhile, a draft of the second part has been communicated to various professional associations and is currently being reviewed and commented on.

What does this first part teach us? Most of it is actually a digestible recap of the relevant provisions of the Code de la propriété intellectuelle, but there are a couple of interesting additional details as well.

So here is my recap of the recap.

An opposition can be filed only against a national patent. It cannot be filed against a European patent, a utility certificate or an SPC. Any person except the patent proprietor may file an opposition. There is no standing requirement for the opponent.

The opponent must be represented if its residence or seat is outside of the EU or EEA – which means that opponents from the UK will ultimately need to be represented.

Just like at the EPO, an opposition may be jointly filed by several persons or entities. In that case, a common representative also needs to be appointed, and the joint opponents will be treated as a single party. Otherwise, unrelated persons or entities may independently file oppositions against the same patent. In that case, the INPI will handle all oppositions together in single joint proceedings.

The opposition time limit expires 9 months after the date of grant of the patent (more precisely, the date of the publication of the grant in the BOPI). No reestablishment of right is possible if the opposition is not filed in due time.

The grounds for opposition are listed as follows, in a limitative manner:

  • Lack of novelty.
  • Lack of inventive step.
  • Insufficiency of disclosure.
  • Extension of subject-matter beyond the content of the application as filed or initial application as filed (in the case of a divisional patent).
  • Lack of industrial application.
  • Subject-matter of the patent not being an invention.
  • Subject-matter of the patent being excluded from patentability (i.e. methods of surgical or therapeutic treatment of the human or animal body; methods of diagnosis applied to the human or animal body; inventions contrary to ordre public, morality or dignity of human persons; inventions relating the human body, its elements and products; inventions relating to animal races, plant varieties, essentially biological processes for the production of plants or animals, processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and animals resulting from such processes).

On the other hand, lack of clarity, lack of support in the description, lack of unity of invention, non-entitlement to the patent or an inaccurate designation of the inventors are not grounds for opposition.

The guidelines specify that the priority of the patent can be challenged in the context of lack of novelty or inventive step.

The opposition can be filed against the patent as a whole or against only some claims.

This the pop up window that users will get on the INPI portal when one of their patents has just been opposed.

An opposition can be withdrawn at any time (the part of the guidelines explaining what the INPI will do in such a case is not in the released part).

There is no mechanism for the intervention of an alleged infringer in pending opposition proceedings after the 9-month period, and third party observations are not allowed.

The admissibility of each opposition application (demande d’opposition”) is verified by a formalities officer.

During the written phase of the opposition proceedings, the opposition is handled by a main technical examiner (“examinateur référent“), who is someone else than the examiner who worked on the case during examination. He/she is assisted by two other technical examiners, and if needed by a legal specialist. During the oral phase, an opposition commission (“commission d’opposition“) comprising the above persons hears the parties. The discussion is chaired by the main examiner. His or her opinion is said to be dominating.

The process is thus slightly different from that of EPO oppositions, wherein the primary examiner mainly in charge of examining the case is not the chairperson of the opposition division.

All documents pertaining to the opposition proceedings are made public on the INPI website, at the exclusion of internal documents, documents comprising personal information or pertaining to a trade secret, or third party observations (which are inadmissible).

As a side remark, I hope that access to this documentation will indeed be thorough and quick. I was not able to find the opposition application against FR 3080526 online, although the mention of the opposition was published on the French patent register on April 8, 2020. Such access will be in particular critical in order for stakeholders to get familiar with how the INPI handles oppositions in practice.

An opposition application as well as any subsequent material must be filed online, on the INPI portal.

The actual filing of the opposition is triggered by the payment of the opposition fee (EUR. 600). Each opposition application will be given a number starting with “DM” (does any reader know what these initials mean?).

If the INPI portal is down, and only in this case, a fax filing will be accepted, provided that it is confirmed online within two working days. I think this provision is not user-friendly and is detrimental to legal certainty. If an opposition application is indeed filed by fax and only confirmed online after the expiry of the 9-month period, there will likely be a difficult discussion between the parties and with the INPI as to what it means for the portal to be “down“, who has the burden to prove this, etc.

The opposition application must be signed and contain the identity of the opponent, the identity of the opposed patent, a declaration stating the scope of the opposition, the grounds for opposition, and the underlying facts and evidence, optionally the designation of a representative, and the justification of the payment of the opposition fee. A power of attorney must be filed unless the representative is a French patent attorney or attorney at law. The INPI portal will assist the opponent with the retrieval of the relevant information on the opposed patent.

The declaration must be in French. The exhibits must also be in French or translated into French. It will be very important in practice to see whether exhibits in English will be tolerated. This would be highly desirable since the vast majority of the prior art that French patent professionals work with on a daily basis is in English. The section relating to language will be in the second release of the guidelines, but according to the current draft, the INPI will have discretion to admit documents in a foreign language if there is no comprehension issue. How the existence of a comprehension issue would be appraised remains to be seen.

The opposition fee must be paid via a debit order on an INPI account, or by credit card.

An opposition application can be complemented during the 9-month period. After this period, the scope and basis for the opposition cannot be extended. New facts and evidence can be submitted but will be treated as late-filed.

The parties have access to the entire written proceedings on a private part of the INPI portal, and this is also where they must make any further submissions.

When there is an inadmissibility issue with an opposition application, the INPI may notify the opponent within the 9-month period, if there is still time to do so. In principle, the various causes for inadmissibility cannot be remedied after the 9-month period, and in this case an inadmissibility decision is issued. It seems that this would be done without oral proceedings.

The grounds for inadmissibility derive from the various requirements set out above: improper identification of the opponent, filing not made on the INPI portal, etc.

One point may deserve an additional word: the declaration in support of the opposition application must sufficiently set out the justification for each ground for opposition.

A generic statement will not be considered as sufficient; for instance, with respect to lack of novelty / inventive step, specific prior art documents and specific passages of these documents must be cited. If the justification is insufficient for one ground, this ground is deemed to be unsubstantiated – I understand that it will not be possible to provide the missing substantiation afterwards. If all grounds are deemed to be unsubstantiated, then the opposition is held inadmissible.

That’s it for now.

The second part of the opposition guidelines currently at the draft stage contains all the relevant information on how the opposition proceeds after the admissibility review.

There is therefore a lot to say, but let’s wait until the final version is established to review it here.

By the way – not sure whether I have mentioned this before, but English-speaking readers may be interested to know that there is an English translation of the section of the guidelines dedicated to patent examination at the INPI: see here. Maybe the other sections will be translated as well at some point.

The opposition battleground

As regular readers of this blog now know very well, the recently enacted loi PACTE authorized the government to rule by way of an ordonnance in order to set up a procedure for third parties to oppose a granted patent in France.

This is of course a major change and an exciting development for patent professionals, in particular patent attorneys – but also INPI examiners.

I have had the privilege to work with them over the past few months as part of an opposition training program, and I must say that it has been a real pleasure. They are very well aware of the various challenges that they will face, but also enthusiastic and eager to get into it all.

A draft of the ordonnance as well as of the implementing rules (décret) has been released on November 22. It is in the process of being dissected and commented upon by various professional associations. Just like in my previous post on the draft provisions regarding utility certificates and provisional applications, there may be some changes in the final version. But we now probably have a pretty good idea of what the system will look like.

Ready for battle?

One convenient way to look at it is to break down the various provisions into two groups: those which are identical to EPO opposition proceedings, and those which are different, or which are specific to French opposition proceedings.

Oh, and I have focused on the main points only.

As an initial warning, whenever I refer to the INPI in the following, it is in fact the Director of the INPI who is formally mentioned in the draft. French law  peculiar: it is drafted as if the head of the patent office were the only person working on cases and issuing decisions…

Let’s start with the familiar waters of EPO-like provisions:

  • The time limit for filing an opposition is 9 months from the publication of the mention of grant of the patent. There can be no restoration of right with respect to this time limit, if the would-be opponent misses it.
  • Any person can file an opposition. In other terms, no standing is required, and straw man oppositions are allowed.
  • Parties must be represented by a patent attorney or an attorney at law if they reside outside of the European Economic Area.
  • The grounds for opposition will be extension of subject-matter, insufficiency of disclosure, lack of novelty, lack of inventive step, and the various sorts of exclusion from patentability / exception from patentability.
  • The opposition can be filed against all claims or only some of them.
  • The notice of opposition must comprise the identity of the opponent, the reference of the opposed patent, a statement of grounds, facts and evidence, the justification that the opposition fee has been paid (the amount of this fee has not been published yet) and optionally the appointment of a representative.
  • If the notice of opposition is defective, the opponent gets an opportunity to regularize its filing, but this needs to be done within the 9-month deadline (except for the appointment of the representative). Otherwise, the opposition is rejected as inadmissible.
  • If several oppositions are filed against the same patent, they are joined into a single opposition procedure.
  • The opposition proceedings comprise a written phase and an oral phasei.e. oral proceedings are summoned upon request of at least one party or upon decision of the INPI itself.
  • The opposition procedure is adversarial – there is thus a right to be heard for each party at every step of the procedure.
  • During the opposition proceedings, the patent proprietor may modify the claims of the patent to address a ground for opposition (but please note that the current draft specifies: a ground for opposition raised by the opponent, which is more restrictive than R. 80 EPC).
  • Of course, any amendment filed during opposition must not introduce any extension of subject-matter, nor any extension of the scope of protection. The amended claims must comply with the requirements of clarity and sufficiency of disclosure (let’s see whether the INPI adopts the same approach as G 3/14).
  • The decision on the opposition has retroactive effect back to the filing date of the patent.
  • If the patent is amended, a new patent document is published, once the decision has become final.

Let’s then turn to those provisions which are so French:

  • Oppositions can be filed not only against patents but also against utility certificates. However, SPCs cannot be opposed.
  • The timeline of the opposition proceedings is slightly different.
    • First the patentee is invited to reply to the opposition, with a deadline prescribed by the INPI (and thus not set in the draft provisions).
    • Then, the INPI sends a preliminary opinion on the case within a 2-month deadline from the expiry of the patentee’s response deadline.
    • This preliminary opinion is communicated to the parties, who are invited to file written submissions within a prescribed deadline.
    • If at least one party files written submissions at this stage, the other parties are invited to file a response within a prescribed deadline.
    • Parties are optionally summoned to oral proceedings.
    • Finally the INPI issues its decision.
  • The opposition is deemed rejected if the INPI fails to issue a decision within 3 months from the closure of the examination of the opposition. Said closure takes place either when a deadline to file observations expires, if the parties fail to file observations or request oral proceedings; or at the latest on the day of the oral proceedings.
  • Not only the scope, but also the reasons for the opposition cannot be extended after the expiry of the opposition time limit.
  • There is no equivalent to art. 105 EPC, i.e. no possible intervention of an alleged infringer after the 9-month deadline.
  • The opposition is stayed in case of claim for ownership of the patent in front of the Paris TGI, or if a claim for revocation is pending in front of a court when the opposition is filed, or if the INPI is waiting for information relevant to the opposition or the situation of the parties, or if all parties request so (for a maximum duration of four months, renewable once). This latter provision will be useful in case the parties are in a negotiation process.
  • There are four possible outcomes of the opposition proceedings: rejection of the opposition, maintenance of the patent in amended form, full revocation. And the fourth one is: partial revocation. In other terms, the INPI will look at all of the challenged claims one by one and may decide that some of them are invalid and others are valid. In that case, only the invalid claims will be revoked. This stands in sharp contrast with the EPO practice of looking only at a set of claims as a whole, a single defect in the set meaning that it has to go down completely.
  • In case of a partial revocation, the patent proprietor will be requested to provide a modified set of claims complying with the partial revocation. The modified set of claims is refused if it is not compliant.
  • The INPI may not continue the opposition proceedings in case all opponents have withdrawn their oppositions, or in case the patent has ceased to be in force.
  • An examiner having examined the patent application may not work on the opposition, but he or she can be heard during the opposition proceedings.
  • A request for limitation is inadmissible if filed when an opposition is pending. If a limitation procedure is ongoing when an opposition is filed, the limitation procedure is closed. But there is an exception if the request for limitation is in the context of a nullity suit.
  • Upon request of the winning party, the losing party is ordered to pay part or all of the costs of the winning party, within the boundaries of an official fee schedule (to be determined).
  • An appeal against the opposition decision can be filed in front of the Paris Cour d’appel within a one-month deadline from the communication of the decision. The statement of grounds of appeal needs to be filed within a three-month deadline from the notice of appeal. The defendant has a three-month deadline from the communication of the grounds of appeal to file its reply brief and possibly a counter-appeal. The parties will need to act through an attorney at law.
  • Third parties may intervene in these appeal proceedings, either in a voluntary or forced manner. Normal rules of civil procedure will apply here.
  • The court re-judges the entire case, in fact and in law. It is explicitly stated that the parties can file further grounds, evidence and arguments relative to the first instance. This does not extend to new requests, in the general sense of the term (“prétentions“), unless they are related to an intervention on appeal, occasioned by a new fact, or have the same aim as those filed in first instance, even on different legal grounds.
  • All deadlines on appeal are extended by one month for parties residing in French overseas territories and by two months for parties residing abroad.
  • The INPI will not be a party to the appeal proceedings. But it gets the opportunity to make written or oral submissions.
  • After the appeal ruling, the parties can file an appeal on points of law in front of the Cour de cassation. The INPI can also file such a cassation appeal.
  • There is an estoppel principle: a claim for nullity of a patent is inadmissible if a final decision on an opposition having the same object and the same cause has already been issued between the same parties.

This is a lot to process, and it is actually unfortunate that stakeholders have been given only something like two weeks and a half to provide their comments.

This new opposition procedure is a major development, and many provisions may have unforeseen consequences which it would be good to have time to think about.

So far, I have heard colleagues wonder or worry about two points in particular.

One is the automatic rejection of the opposition if the INPI does not issue its decision in due time.

This is one of those so-called SVR (“silence vaut rejet“) provisions that popped up everywhere a few years ago. Such automatic rejection would of course be highly unfair to the opponent.

However, I am not excessively preoccupied. We already have to live with SVR deadlines, and I am certain that the INPI will do whatever it takes not to fall into the trap of an automatic rejection. Besides, we are actually lucky that the SVR deadline is computed from the closure of the examination of the opposition: thus, the INPI will have the complete submissions at hand and can work on its decision within the deadline. It would have been much riskier if the SVR deadline had been computed, say, from the filing of the opposition – regardless of the number and timing of the parties’ submissions.

Another point that has everyone gossiping is the role of the INPI on appeal.

Indeed, the INPI can make submissions. If they make use of this right, it means that they will necessarily side with one party or the other. Besides, they even have the right to file a cassation appeal once the appeal decision has been issued. Isn’t it strange for the patent office to first have to act as an impartial arbitrator between the parties and then become a quasi-party or an actual party to the proceedings at a later stage?

Like my colleagues, I also have questions of my own.

For instance, will the INPI apply EPO-like standards or rather French court standards when examining oppositions?

I am not talking here about the problem and solution approach or about the gold standard, because I do not believe that there is a huge difference between Munich and Paris in this respect. I am mainly talking about claim interpretation. On this particular topic, the EPO and French courts could not be further apart.

The many differences between the proceedings in front of the INPI and at the appeal stage also raise some concerns.

For instance, there can be no intervention in first instance, but there can be on appeal. Furthermore, as far as I understand, the opponent will be severely limited in terms of any new objections that it may come up with in first instance, after the expiry of the 9-month time limit; but new objections, on the other hand, may be allowed on appeal. Isn’t this contradictory?

Once we have the final provisions in front of us, there will be a lot of strategic planning to make, both in terms of patent drafting (think about this notion of partial revocation, which is certainly an incentive to have as many validity fallbacks in a granted patent as possible) and in terms of freedom-to-operate / litigation.

To be continued, for sure!

The provisional provisions

Further to the recent enactment of the loi PACTE, a game changer for French patent law, a whole bunch of implementing rules was due to ensue.

We have now had a glimpse of what the first salvo of the implementing rules will look like, as the DGE (Direction Générale des Entreprises) has just released a draft of executive order. Comments are in the process of being collected by various professional associations such as the CNCPI, the French AIPPI group, and others.

The purpose of this draft executive order is twofold: to redesign the rules on utility certificates; and to introduce the concept of provisional patent applications.

Let’s start with utility certificates. As a reminder, according to article 118 of the loi PACTE, the maximum duration of utility certificates is supposed to be brought from 6 years to 10 years; and it will now be possible to convert a utility certificate application into a patent application, whereas only the opposite is possible as of today.

The draft executive order specifies that the request to convert a utility certificate application into a patent application needs to be filed within 18 months from the filing or priority date, and at any rate before technical preparations for publication are completed. The deadline for requesting the opposite conversion (from patent application to utility certificate) will be aligned accordingly.

Protection of legal certainty for third parties was certainly the main concern here. By the time the patent application or utility certificate gets published, the fate of the IP right will be fixed – either patent or utility certificate application.

The main difference then between a patent application which was filed as such and a patent application stemming from a utility certificate application is that the former will generally be published together with a search report (assuming that it is a first filing), while the latter may not (since no search report is established for utility certificates). I wrote “assuming that it is a first filing“, because search reports for patent applications claiming a foreign priority are generally established at a (much) later stage.

The deadline for paying the search fee for a utility certificate application converted into a patent application will be 1 month from the request for conversion.

Regarding the increase in duration of utility certificates, from 6 to 10 years, a big question mark at the time the loi PACTE was published was that of transitional provisions.

A note issued by the DGE together with the draft executive order mentions that, in the absence of any specific provision in the law, the 10-year duration will apply to all utility certificates in force at the date of entry of the law into force.

The note explains that an IP right is not an “acquired right” but an “ongoing legal situation“, which justifies this solution – which would be different if, for instance, we were talking about a statute of limitations.

I guess the protection of interests of third parties was not so much of a concern for this part.

Interestingly, special transitional measures are planned for utility certificates which are almost 6-years old when the law enters into force. It will exceptionally be possible to pay the 7th renewal fee up to four months after the entry into force of the executive order (or within an additional 6-month grace period starting from the expiry of the above deadline).

Stretching utility certificates.

This now brings us to the second aspect of the draft executive order, namely the advent of provisional patent applications.

This was not mentioned in the loi PACTE and is a complete creation of the executive order. But we knew that it was coming, since rumor has it that it has been one of President Macron’s pet projects for a number of years.

So here is what we will be looking at:

  • A provisional application shall comprise a request for grant, a description and drawings. Claims and an abstract may be included – but they are not required. Similarly, when a French priority is claimed, a marked up copy of the prior filing must be included when a regular patent application is filed, but this will not be necessary if a provisional patent application is filed.
  • Only the filing fee is due, within one month after filing (whereas, for a regular patent application, also the search fee is due within the same deadline).
  • The applicant may request that the provisional application be made “compliant”, i.e. that it be transformed into a regular patent application, or into a utility certificate application, within 12 months from the priority date. I understand that this will require filing the claims / abstract / marked up copy of the prior filing, if these elements were not provided on the filing date – though I must say that this is not clear in the draft.
  • If this is not the case, the provisional application will be deemed withdrawn (this notion of fictional withdrawal is one which we are very familiar with under the EPC, but it is new in French patent law).
  • The deadline for paying the search fee will be one month after filing the request to make the application compliant.
  • A patent application cannot be made “provisional” after filing, it has to be marked as provisional from the start.
  • The defense administration will review provisional patent applications and authorizations to disclose the invention will be issued, similarly as for regular patent applications.
  • The provisional application can claim a French priority, as suggested above.
  • However, if there is a Paris Convention priority claim, then this will be interpreted as a request to make the application compliant – so, the applicant will not be able to keep its application as a provisional one. My understanding is that this may be because a Paris Convention priority claim can be filed up to 16 months after the earliest priority date, which sort of conflicts with the 12-month deadline for making the provisional application compliant.
  • If the applicant files a request for early publication, a request to make the provisional application compliant will have to be filed at the same time, otherwise the request for early publication will be inadmissible.

So, what can we make of these new provisional patent applications?

This is a new tool that few – if any – in the patent profession asked for. In fact, most of us did not understand at all what the point was.

It should be borne in mind that getting a filing date for a (regular) patent application (which may thus serve as a basis for claiming priority in France or abroad) only requires filing a description.

The claims and abstract are not necessary. Neither is the payment of any fee (not even the filing fee). So, regular patent applications already provided the same benefits as the future provisional patent applications.

The way I see it, the only difference is that a provisional application can be made into a regular patent application without having to refile. But this is a very slight advantage, and it will also result in an overall duration of scope of protection which will be reduced (since, when you refile 1 year after the initial filing, you can get 20 years of protection from the second filing).

Even after reading the draft executive order, I still cannot see in what circumstances I would recommend filing a provisional patent application.

The answer to the conundrum can probably be found in the following statement in the DGE’s explanatory note:

Feedback from innovative business and start-up entrepreneurs has shown that they are reluctant to undertake to protect their inventions. The patent filing system, due to its formalism, is often perceived as onerous and costly. 

I would thus say that all of this is really about communication and perception, not about actually providing additional useful legal tools to applicants.

After all, this can be a valuable reason. Let’s not underestimate the importance of communication and perception.

However, one major concern is that this communication and perception effort may ultimately result in miscommunication and misconception.

If “innovative business and start-up entrepreneurs” believe that filing a draft of scientific paper, or even an invention memo, as a provisional application, without drafting claims and without working with a patent professional, can serve as a basis for a strong future patent application, or even can secure them a priority date, they are in for some serious disappointment. Think G 2/98; and think “gold standard“, which is applied under French law in a similar manner as at the EPO.

Patent law is complex, patent rights are difficult and costly to obtain and enforce. This is a fact, not an erroneous perception. Aren’t people better off if they are aware of this reality, rather than believe that a provisional filing is a cure-all?

A last word on the date of entry into force of the new system.

The rules on the transformation of utility certificate applications into patent applications will enter into force the day after the publication of the executive order. As for the rules on provisional patent applications, they will enter into force on July 1, 2020.

Please bear in mind that the executive order is not yet in its final form and that the draft may still be amended, especially based on input from stakeholders. But I suspect that only minor bugs will be fixed, and only clarifications / editorial changes will be made.

Where is the finish line?

Did you think you would never hear again of the thrilling subject of the French statute of limitations, and of its very controversial application to patent nullity suits? Well, think again.

In a previous post on the loi PACTE, I mentioned that the new provision putting an end to the time bar on patent nullity suits would immediately enter into force but that it remained to be seen how this would be interpreted in practice.

And so it is that, after spending lots of ink and pixels on how the statute of limitations applies to patent nullity actions, we may now have to devote more ink and pixels to a discussion on how exactly the statute will no longer apply.

Without further ado, as they say, I will now leave the floor to Matthieu Dhenne who will provide his insight on this matter.

I would like to come back to an issue close to my heart, as readers of this blog already know: the limitation period of actions for the annulment of industrial property titles.

I will not recall here the entire debate, already mentioned many times on this blog. The issue can be summarized by recalling that French judges applied a 5-year limitation period of the French Civil Code to these actions and that a debate has arisen about this case law, in particular because of the disastrous solutions to which it led.

The legislator has since intervened to combat this case law by declaring that these actions shall not be time-barred.

But a new debate is starting to emerge. Indeed, French Act No. 2019-486 of May 22, 2019, on the growth and transformation of companies – known as the “PACTE Act” – specifies that actions for the annulment of industrial property titles are not subject to any limitation period, while providing that that this applies to the “titles in force on the day of its publication“.

How should we interpret this provision?

The statute of limitations – the finish line.

Let us immediately rule out the interpretation according to which the parliament, by aiming at the titles in force on the day of the publication of the act, has excluded, on the contrary, the titles that were not (yet) in force on this date. This interpretation is disqualified, because it makes no sense. Indeed, we cannot consider that a transitional provision may have another object than transitional law, which deals with the application of an Act to past facts (i.e. facts that happened prior to its entry into force).

Only one question seems interesting with regard to the transitional provision discussed here: could it induce a retroactive effect by applying to titles in force on the day of the publication of the act, even though this day is after the limitation period has expired?

For instance, could a Court of Appeal apply the new Act to a case in which the limitation period applied at first instance? We should recall that the prevailing principle in French Law is that of the non-retroactivity of new laws, which is deduced from Article 2 of the French Civil Code; and that its counterpart is the immediate effect of new laws. Article 2222 of the same Code specifies that the limitation period, once expired, cannot be called into question.

The legislator may, however, provide, by way of exception, for the retroactivity of a law, if this is clearly and sufficiently stated. In this case, Article 124 of the PACTE Act does not specifically state that it is “retroactive”, but this is not required by Article 2 of the Civil Code or by the interpretation of the French Supreme Court (Cour de Cassation). Moreover, the specific mention that the law is “retroactive” would, as such, be of little use because it would be too vague.

Except if one considered that a specific reference to retroactivity is indeed mandatory – which the Cour de Cassation has never held – there is no evidence to suggest that the transitional provision in question is not clear or sufficient. We are therefore in a situation where it will be up to the judges to interpret the provision as closely as possible to the spirit of the text.

It must be kept in mind that the legislator intended to put an end to a jurisprudence that was belied by its text. It was therefore appropriate to refrain from restricting its application either to ongoing trials or to proceedings for annulment introduced after its entry into force or to actions for annulment based on titles issued after its entry into force. On the contrary, the text had to be worded in such a way that it could apply to all titles in force, which included all the aforementioned cases, but also titles previously issued and which had not given rise to legal proceedings on the date of the publication of the law.

Thus, the wording “titles in force on the day of its publication” seems to cover all pending and future actions and seems therefore retroactive.

I will have the opportunity to come back in more detail to this subject next week on @DeBoufflers Blog and then in the journal Propriété Industrielle (December issue); the latter will include a detailed response to an article supporting the opposite thesis, which was published in the same journal this summer.

Thank you Matthieu.

Transitional provisions are often tricky and can give rise to divided case law.

We have been there before, when the number of courts having jurisdiction in patent matters was reduced from 10 to 7 and then down to 1. And so, I would not be surprised if we got surprised again.

Data scarcity

Data scarcity is not the first feature that comes to mind when one thinks about our present time.

Plethora, excess and overplus are probably more accurate descriptors.

But French patent law may be (once again) an exception, as there has been for a number of months a real shortage of online accessible judgments.

Like most court decisions in this country, patent law rulings are in theory public documents. But, nowadays, can a document be considered as truly made available to the public if it is not available online, and if you have to place an official written or in-person request with the court’s clerks in order to hopefully get a copy?

In recent years, access to patent law decisions has made huge progress, in particular thanks to the online case law database hosted by the French patent office (INPI). But the database is not up-to-date and has not been for months now.

As far as I understand, the problem was caused by a new general policy of the justice administration, reflected in a memo dated December 2018.

The memo acknowledges that most judgments must be made available to the public, and that copies thereof can be individually communicated, upon request.

But then the memo adds that a massive communication of decisions “should be in principle avoided“. It provides the courts with a number of reasons why they can / should refuse such requests:

  • Such requests can place an undue burden on the (notoriously understaffed and underfunded, I should add) departments in charge.
  • Massive communication can breach principles of data protection.
  • In particular, decisions should not be communicated before being redacted to remove personal information.

I understand that this policy aims at thwarting legaltech companies (as well as more conventional editors?) eager to siphon off all of the justice administration data to process it (and make a profit out of it). And there may be good reasons for this. But the policy apparently had the side effect of also freezing access to legal information on the website of the INPI – a public institution.

A number of appeal and cassation appeal rulings are still published more or less regularly on the INPI website – although there is no way to know if this publication is exhaustive or not.

On the other hand, there are almost no more recent first instance decisions on the database (I can see only two first instance patent-related rulings issued in 2019 as I am writing this post). And the current general justice administration website (Legifrance) has zero – it has always been little useful in the field of patent law. This leaves us with subscription-based websites – but they are subscription-based; and I have heard that their collections may also be incomplete.

I assume that the administration’s plan is to set up its own new platform giving access to all decisions, including first instance ones.

Consider article L.111-13 of the Code de l’organisation judiciaire. When it was introduced in 2016, the initial wording of its first paragraph was:

Without prejudice to particular provisions on access to justice decisions and their publicity, judgments issued by judicial courts are made available to the public for free, making sure that privacy of those concerned is not impinged on. 

In March 2019, this paragraph was amended as follows, and another one was inserted:

Subject to specific provisions on access to justice decisions and their publicity, judgments issued by judicial courts are made available to the public for free in electronic form

Family names and first names of the individuals mentioned in the judgment, when they are parties or third parties, are redacted prior to release. Any element making it possible to identify parties, third parties, judges and court clerks is also redacted when its disclosure may impinge on the safety or privacy of these persons or their relatives. 

As you can see, things have gotten more specific: all decisions should fortunately be available online, not just communicable upon manual request. But they have to be carefully redacted first – including possibly by deleting the judges’ names. Could it be that this constraint is what is making everything more complex?

Do not expect to find this type of functionality in the future government case law database.

Another paragraph in the same article adds that the specifics of these provisions will be set by way of executive order. As far as I understand, no such executive order has been issued yet – so that the above provisions are not yet applicable. 

Interestingly, the December 2018 memo mentions the following:

The fact that article L. 111-13 […] on open data of court decisions is not applicable in the absence of an executive order to this end cannot be bypassed by way of a massive communication process which would not provide useful guarantees for the protection of personal data. 

In other terms, until the administration’s intended complete open database materializes, there will be no similar database elsewhere.

If any reader is privy to information on the timing of completion and release of the future database, I would be happy to know. Otherwise, let’s hope that the INPI will soon be able to resume a timely publication of all patent-related rulings.

As shown above, redaction of personal information in judicial decisions seems to be a primary concern of the administration. In this respect, another interesting paragraph was introduced into article L. 111-13 in March 2019:

Identification data of judges and court clerks cannot be reused so as to assess, analyze, compare or predict their real or assumed professional practice. A breach of this prohibition is punished according to articles 226-18, 226-24 and 226-31 of the Code pénal, without prejudice of measures and sanctions provided in Law No. 78-17 of January 6, 1978 relating to computer sciences, data and liberties. 

By way of information, article 226-18 Code pénal sets maximum penalties of a five-year imprisonment and a EUR. 300,000 fine. The other two articles add complementary sanctions for legal entities and individuals, respectively.

How very French to try to make us forget that judges are individuals having their own specific views – and what a contrast with what they do in the U.K. or the U.S.

On the one hand, I can see why data analysis targeting specific magistrates can be a problem. What if, knowing that Mr. X or Mrs. Y usually rules in this or that manner, parties are able to go forum-shopping by choosing the judge they like best. My understanding is that this is not possible for cases on the merits, but is possible for ex parte petitions, such as infringement seizure petitions, as different judges of the third chamber of the Paris Tribunal de grande instance (TGI) are on duty on different days of the week. And I am talking only about IP here, I am sure there are more serious potential concerns in other areas of the law.

On the other hand, if there are indeed differences of practice between judges, and I am still talking only from an IP law perspective, is this not information the public should be entitled to have?

One of the major issues of patent law, in my view, is unpredictability for all stakeholders. When a company asks whether a patent is valid or not, whether it is infringed or not, or what to do in order not to infringe, those are usually tremendously complex questions.

They make our lives as patent attorneys interesting, I will grant you that. But, on the economic standpoint, not being able to have any certainty on issues of validity and infringement is a problem. It also paves the way for various sorts of abuse. Think about the infringer willing to take a chance with a patent that its owner will not be certain to be able to successfully assert. And think about the patentee knowingly wielding its invalid title as a sword of Damocles.

Therefore, isn’t all information allowing stakeholders to reduce the level of uncertainty as much as possible legitimately useful?

Last week’s post on the different insufficiency doctrines used by Board 3.2.05 and Board 3.2.06 of the EPO offers a nice example. Isn’t this discrepancy important to know as a patentee, opponent or third party involved in the diaper industry or any other relevant technical field?

Even though the judges of the TGI work together in order to harmonize their judgments as explained in this post, they may still have different approaches. Even more importantly, the appointment of new judges to the IP chamber may also bring about significant changes.

By restricting (heck, by outlawing) any judge-based data analysis, stakeholders will be left in the dark.

In fact, this may even foster inequality between patent professionals, and between patent stakeholders. There will always be lawyers in the know, because they regularly handle many cases in front of the same judges and may even occasionally have informal discussions with them – and all the others.

Now, I would like to bring these thoughts to a conclusion, on a more self-centered point of view.

Obviously, this blog cannot properly report on French case law without any court decisions.

I do have a couple of sources, and appeal rulings seem to still be forthcoming. But first instance decisions are also essential to review; because many cases don’t give rise to an appeal ruling, and because first instance judgments tend to be more thorough and thus more interesting to analyze.

So I would be most grateful if readers could pass on what they have, so that it can be shared here.

I am happy to cite my informants or to keep them anonymous. And if you supply a decision and would like my post to include a comment from you on the decision, I am also happy to oblige.